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Wednesday
Mar132013

Five Tips for Developing and Protecting Your Trademarks

Business Litigation & Trademark Enforcement

 

by Nicholas Kanter & Tal Grinblat
March 13, 2013

 

A trademark is a word, phrase, design, logo, sound or color used to identify the source of a party’s goods or services. For many companies, their trademark can be their most valuable asset because of the association consumers have with the products or services bearing the particular mark.

For example, when a person sees a computer bearing Apple’s iconic logo, that person associates the image with a company known for manufacturing high quality computers, phones and tablets with certain user-friendly functions and qualities for which Apple is known.  This association is the result of Apple’s extensive advertising, promotion and sales of its Apple-branded products.

Before adopting a trademark and developing goodwill in the mark, it is important to research whether there are any significant obstacles that may prevent using the mark in the future. If after conducting the search you determine to move forward, it is equally important to protect your mark to prevent others from using or adopting your mark without permission.

 

How to Develop and Protect Your Trademark

 

1. Perform a Trademark Search:

In the U.S., trademark rights are acquired based on use. With certain exceptions, the first person to adopt and use a particular trademark generally obtains superior rights to use that mark over all other junior users.

Before adopting a mark, it is a good idea to order a comprehensive trademark search report. A search report will tell you about others that may already be using your desired trademark (or similar trademark). Knowing who else may be using your desired mark can help you assess the risks of moving forward with the mark, or prompt you to come up with another trademark.

 

2. Register Your Trademark:

If the trademark search report does not reveal any significant obstacles to the use of your desired trademark, you should apply to register your mark with the United States Patent and Trademark Office (USPTO). Although trademark rights are based on use, a federal registration on the Principal Register of the USPTO has many significant benefits, including a legal presumption that you own the registered mark and your exclusive right to use the registered mark for the goods/services for which your mark is registered nationwide.

If you sell or plan to sell products or services under your trademark outside the U.S., you can protect your mark by registering it with the appropriate trademark agency in each applicable country. This can be done by filing a trademark application in each desired country, or by filing a single application via the Madrid Protocol, and then seeking to extend the protection granted to the other countries selected. 

 

3. Use and Promote Your Trademark:

The primary purpose of a trademark is to identify the source of the goods/services you’re selling. Therefore, it is important to use and promote your trademark so that the public associates the mark with you, and the goods/services you sell.

Non-use can lead to the cancellation of your registration.  Moreover, the strength of your mark, and your right to exclude others from using your mark, will increase with greater public recognition.

 

4. Make All Required and Optional Post Registration Filings:

To maintain the trademark registration, you must make certain required filings. In the U.S., the owner of a registration must file a “Declaration of Continued Use” between the 5th and 6th year of the registration. At the same time, the registrant can file a “Declaration of Incontestability” to make the trademark registration “Incontestable.”  In addition, a trademark registration must be renewed every 10 years by filing a renewal application between the 9th and 10th years of registration.  

    

5. Police and Enforce Your Rights in Your Trademark:

As the owner of a trademark, you have the obligation to police your mark to prevent unauthorized third parties from using it. Failure to do so can lead to losing the exclusive right to use your mark.

If someone else is using your mark without authorization, you can send a “cease and desist” demanding that the person cease using your mark. If the unauthorized user applied to register your mark, you can oppose the registration of the mark by filing an “Opposition” with the Trademark Trial and Appeal Board. Finally, you can file a lawsuit for trademark infringement if the unauthorized user refuses to stop using your mark.

 

Nicholas Kanter is a Business Litigation Attorney experienced in intellectual property enforcement and defense litigation. Contact him via email: nkanter@lewitthackman.com for more information regarding intellectual property enforcement.

Tal Grinblat is a Trademark Attorney and Certified Specialist in Franchise and Distribution Law (California State Bar Board of Legal Specialization). Email: tgrinblat@lewitthackman.com for further details on establishing trademarks and franchises, and protecting trade secrets.

 

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